Skinit, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1207001453353
Complainant is Skinit, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skiinit.com>, registered with Internet.bs Corp.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 13, 2012; the National Arbitration Forum received payment on July 13, 2012.
On July 17, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitra-tion Forum that the <skiinit.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@skiinit.com. Also on July 23, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 14,, 2012, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the SKINIT.COM mark in its business, which manufactures and markets vinyl covers for mobile phones, MP3 players, laptop computers and other portable electronic devices.
Complainant owns federal trademark registrations, on file with the United States Patent and Trademark Office (“USPTO”), for its SKINIT.COM mark (including Reg. No. 3,241,843, registered May 15, 2007, application filed May 17, 2006).
Respondent registered the <skiinit.com> domain name on February 1, 2007.
The domain name is confusingly similar to Complainant’s SKINIT.COM mark.
The disputed domain name resolves to a website that redirects Internet traffic to a website featuring hyperlinks to third-party commercial sites, some of which compete with Complainant’s business.
Respondent receives pay-per-click referral fees from the operation of those hyperlinks at its website.
The contested <skiinit.com> domain name is confusingly similar to Complainant’s SKINIT.COM mark.
Respondent’s registration and use of the disputed domain name constitutes bad faith typo-squatting.
Respondent lacks rights to and legitimate interests in the disputed domain name.
Respondent has not been commonly known by the disputed domain name and does not use it in connection with a bona fide offering of goods or services.
Respondent is not sponsored by Complainant in any way and has no permission to use Complainant’s SKINIT.COM mark.
Respondent registered and uses the disputed domain in a manner that disrupts Complainant’s business.
Respondent has exhibited a pattern of bad faith registration and use of domain names that are typo-squatted versions of the marks of various businesses in addition to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the SKINIT.COM trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007), the panel there finding that a complainant’s trademark registration with the USPTO provided evidence adequate to demonstrate its rights in a mark pursuant to Policy ¶ 4(a)(i).
Complainant’s mark registration became effective on May 15, 2007, an appli-cation for such registration having been filed on May 17, 2006. Although the effectiveness of Respondent’s domain name registration (February 1, 2007) predates Complainant’s mark registration effective date, Complainant has priority in rights over Respondent because, under the Policy, rights in a mark run from the date of mark registration application filing rather than the later registration effective date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that a complainant’s rights in the KISSES trademark through regis-tration of the mark with the USPTO “date back to the filing date of the trademark application and predate respondent’s registration”).
Turning then to the central question arising under Policy ¶ 4(a)(i), we conclude from our review of the record that the <skiinit.com> domain name is confusingly similar to its SKINIT.COM trademark. The only alteration made to the mark in forming the domain name is the addition of an extra letter “i.” This is inadequate to distinguish the domain name from the mark from which it was derived under the standards of the Policy. See, for example, Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the domain name <vallpak.com> to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the <skiinit.com> domain name, and that Respondent is not sponsored by Complainant and has not been given permission to use Complainant’s SKINIT.COM mark. Moreover, the WHOIS information for the domain name identifies the registrant only as “PPA Media Services / Ryan G Foo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have demonstrated that it has rights to or legit-imate interests in the domain name within the contemplation of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), concluding that a respondent was not commonly known by a disputed domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), based on the relevant WHOIS inform-ation and other evidence in the record.
We next observe that Complainant contends, without objection from Respondent, that Respondent uses the <skiinit.com> domain name to redirect Internet traffic to its website, which offers pay-per-click hyperlinks to websites featuring enter-prises competing with the business of Complainant. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use of the domain name under Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007):
The disputed domain name … currently resolves to a website displaying … links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
Finally under this head of the Policy, Complainant asserts, again without object-ion from Respondent, that Respondent’s registration and use of the <skiinit.com> domain name is typo-squatting, the calculated creation of a domain name which is deceptively similar to the mark of another in hopes of taking advantage of spelling errors made by Internet users’ when entering the names of businesses in their web browsers. We concur, and therefore conclude that Respondent’s typo-squatting demonstrates that Respondent cannot claim rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, a respondent had “engaged in typosquatting, which provides additional evidence that respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel therefore finds that Complainant has satisfied Policy 4(a)(ii).
The record amply demonstrates that Respondent holds other registrations for domain names that are typo-squatted versions of trademarks belonging to other entities. This pattern of registration and use of domain names is evidence that the instant domain name was registered and is being used in bad faith under Policy ¶ 4(b)(ii). See, for example, Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000), holding that a respondent’s registration of multiple domain names formed from the marks of others is a consideration in weighing a determination of bad faith under Policy ¶ 4(b)(ii).
In addition, we are persuaded from the evidence that Respondent’s registration and use of the contested domain name in the manner set out in the Complaint demonstrates bad faith registration and use of the domain in that it disrupts Com-plainant’s business within the meaning of Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), concluding that a respondent’s use of the website resolving from a disputed domain name, which was confusingly similar to the mark of another, to direct Internet users to the websites of a complainant’s competitors demonstrated bad faith registration and use of the domain name under Policy ¶ 4(b)(iii).
Further, that Respondent evidently collects revenue by hosting third parties’ hyperlinks on its resolving website to attract Internet consumers through the use of a domain name confusingly similar to Complainant’s SKINIT.COM trademark, demonstrates bad faith registration and use of the domain under Policy ¶ (b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website offering links to third-party websites featuring services similar to a complainant’s.
Finally, by typo-squatting Complainant’s SKINIT.COM trademark, Respondent has further evidenced that it registered and is using the <skiinit.com> domain name in bad faith. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005), holding that a respondent registered and used disputed domain names in bad faith where those domain names were typo-squatted versions of a complainant’s mark.
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the contested <skiinit.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 23, 2012
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